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FAQ: Patents

Gunn, Lee & Cave, P.C. are the attorneys of choice specifically for patent licensing. We register patents in the nations largest patent hubs, including San Antonio and beyond: Eastern & South Texas, Los Angeles, San Francisco, Chicago, New York, Boston and Washington. Beyond patent licensing, litigation and prosecution accounts for over half of our clients. We would be happy to schedule an appointment to discuss any concerns or questions you have about initiating a intellectual property lawsuit.

What is a patent?

A patent is the recognition and grant of property rights to a novel invention, plant, or design that is given by the United States Patent and Trademark Office. A patent allows a patentee to exclude others from making, selling, or using the patentee's invention, plant, or design without the patentee's permission.

Are there different kinds of patents?

Yes, there are three different kinds of patents:

  1. Utility patents,
  2. Plant patents, and
  3. Design patents.

Which type of patent you should pursue depends on the subjection matter of your invention. Utility patents protect new and useful processes, machines, articles of manufacture, compositions of matter, or any new and useful improvement within the aforementioned categories. Utility patents encompass the broadest amount of subject matter and are the most commonly encountered patent type. Plant patents protect novel varieties and species of asexually propagated plants. If you seek protection of a new species of plant that propagates by seed, a plant patent is not the proper route for protection. Rather, we would seek protection under the Plant Variety Protection Act. Finally, design patents protect designs that are new, original and ornamental.

Each type of patent offers basically the same kind of protection. However, there are slight differences among the three. Probably the most visible difference is the length of protection. Utility and plant patents can stay in effect for up to 20 years from the date the application is filed or 17 years from the date the patent is granted, whichever is longer. In contrast, design patents can last a maximum of 14 years from the date the patent is granted. Another key difference is the legal tests used to determine whether a patent is being infringed. The test is different for each.

How do I know if I can obtain a utility patent on my invention?

In order to constitute patentable subject matter for a utility patent, an invention must be novel, useful, and nonobvious from previous inventions. The first two criteria are easily understood while the last criterion, nonobviousness, is a difficult concept to grasp at times. The first two criteria are exactly as they sound. To be novel the invention must be new and someone else cannot have invented it already. To be useful the invention must have some degree of utility to it. In other words, your invention must have some sort of recognizable and describable use. Finally, in order to be patentable your invention must be nonobvious. This requirement means that your invention may not be an obvious improvement to a previous invention.

Although easy to state, what exactly rises to the level of an obvious improvement is a nebulous standard that has been impossible for judges and intellectual property attorneys alike to define with certainty. In fact, the United States Supreme Court has attempted to define this standard on several occasions, but it continues to be a difficult concept. As registered patent attorneys, every attorney at Gunn, Lee & Cave has the training and knowledge to make a qualified assessment of whether an invention will overcome the nonobvious criterion, as well as the two other requirements. If you have any questions about whether your invention will meet the criteria for patentability, you can schedule an appointment with one of our attorneys and find out.

What is the process for obtaining a patent?

The process of obtaining a patent, which is called "patent prosecution," begins with the submission of a patent application to the United States Patent and Trademark Office (USPTO). For someone unfamiliar with the application process, applying for a patent can be a difficult and cumbersome procedure. To be complete, the application must contain a specification of the invention, which includes a written description of the invention, at least one claim, and any drawings necessary to understand the invention. Although the other two sections are important, the claims section is vital. This section is where an inventor claims exactly what he/she has invented. If an applicant does not have experience drafting claims, he/she may not receive the broadest protection possible for the invention. As a result, future inventors may create inventions that are essentially the same invention as yours, but because the claims were poorly drafted in your patent application you may have no recourse against the subsequent inventor.

Usually there are other parts to a patent application, but in order to be accepted, the aforementioned requirements are essential. If any one of the three is missing the USPTO will not give the application a filing date until the missing part is added. This result can be extremely detrimental to an inventor because obtaining the earliest filing date possible is probably the single most important aspect of patent law. Thus, ensuring your application is complete from the start can be critical.

Once the patent examiner determines that the application is complete, he/she analyzes the application and determines whether to allow a patent to be granted. The examiner examines the application in light of the statutory requirements for a patentable invention. In other words, the examiner looks to the prior art (i.e., earlier patents or inventions without patents) and determines if the invention stated in your application is new and not an obvious variation of the prior art. If the invention expressed in your application and the application itself fulfills all the necessary conditions for patentability, the application is placed in a condition for allowance of a patent.

Rarely, if ever, will an examiner deem an initial application as in a condition for allowance after the first submission. Instead, the examiner usually requires several amendments before allowing the application to issue as a patent. Patent attorneys are trained to respond to an examiner's concern and know how to mold an application into a position for allowance.

Do I need to hire a registered patent attorney to submit a patent application?

No, but not hiring a patent attorney or agent could be a grave mistake on your part. The procedural manual that governs the application process is broken into two different books and is a combined six inches thick. To become patent attorneys, we had to learn and were tested on the contents of this entire book. The learning process took us many months of studying and extensive training.

The benefits of having an experienced patent attorney conducting the patent prosecution are so invaluable that even the U.S. Patent and Trademark Office "strongly recommends" an applicant hire one. Patent attorneys are intimately familiar with the application process, have experience drafting claims, and have access to the necessary resources for preparing the application properly. Choosing to prosecute a patent application on your own could prove disastrous once your invention becomes successful and others start to copy it. Without a well-written application, you may not be able to prevent others from taking advantage of your idea.

Do I have to hire a registered patent attorney or patent agent to prosecute my patent application?

Yes. Other than prosecuting the application yourself, only practitioners that have passed the registration examination (i.e., the patent bar) and become officially registered may represent a client in the United States Patent and Trademark Office (USPTO). The USPTO sets high standards for its registered attorneys and each one has to be specifically approved before he/she can practice. Any attorney that is not registered or has been suspended from practicing in the USPTO cannot represent you for a patent application.

What does Gunn, Lee & Cave do to help me obtain a patent?

After an initial consultation to help us understand your invention, the patent prosecution process will truly begin. First, we will conduct a patentability search where every single registered patent that is on file at the United States Patent and Trademark Office (USPTO) is searched to determine if your invention qualifies as patentable over the prior art. Using our expertise and experience, we will determine if you invention is indeed patentable and communicate the results to you.

After getting your approval, we will continue the prosecution by drafting your patent application. Once we are done, every portion of the application from the title to the claims and including professionally drawn images of your invention will be ready for submission to the USPTO. Then we will send both the application and the pertinent results from the patentability search to the USPTO for examination.

At this point, we will wait for the examiner to respond to your application. As mentioned earlier, applications are rarely in a condition for allowance after the initial submission. Instead, the examiner will conduct his/her own patentability search and will respond to your application with an Office action according to the results of that search. Once we receive the first Office action, our attorneys will use their vast experience and knowledge of the relevant patent law and past court decisions to respond to the examiner's Office action. This process will continue until the application is either allowed or rejected.

Assuming the application is allowed, a patent will issue and you will become the registered owner of the right to exclude others from making, using, or selling your invention without your permission. You can then decide if you would like us to manage your patent by notifying you of when maintenance fees are due to the USPTO to keep your patent in force. In addition, we will notify you if some other party is trying to challenge the validity of your patent or threaten your property right in some other way.

How long does it take to prosecute an application for a patent?

Prosecution times vary according to several factors, so the prosecution time is different for almost every patent application. Typically, patent prosecution takes about two years from the date of filing the application to the date of allowance.

Does Gunn, Lee & Cave offer patent infringement litigation?

Absolutely! Our attorneys are experienced in both the litigation and prosecution aspects of patents. Litigation accounts for over half of our clients and we would be happy to schedule an appointment to discuss any concerns or questions you have about initiating a lawsuit.